Protecting Intellectual Property

Transcription

Protecting Intellectual Property
Protecting
Intellectual Property
Peter D. Sabido
Kolisch Hartwell, P.C
Intellectual Property Law Firm
Portland, OR – Palo Alto, CA – Boise, ID
Invention to Venture Workshop
University of Portland
March 3, 2007
© Kolisch Hartwell 2007
All Rights Reserved
Objectives
 Understand the basics of the primary
areas of intellectual property law:
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Patents
Trademarks
Copyrights
Trade Secrets
 Understand some entrepreneurial
considerations for each of those areas
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US Patent No: 6,970,105
Passenger Control System During a Plane Flying
"The system is designed in a
manner that the emotional
conditions of the passengers
are detected and, in case of
change of such conditions, the
plane personnel is informed so
as to intervene promptly on the
related passenger... the
system referred to can deliver
to the evil minded person a
substance like a narcotic or a
strong tranquilizer adapted to
neutralize the offensive
capability thereof”
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All Rights Reserved
PATENTS
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What is a Patent?
Grants the right to exclude others from
making, using, selling, offering to sell, or
importing into the United States a
“patented invention” for a fixed period of
time.
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All Rights Reserved
Types of Patents
 Utility Patents
 Design Patents
 Plant Patents
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What can be Patented?
 “Anything under the sun made by man”:
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Devices
Compositions of Matter
Processes
Articles of Manufacturing
Methods of Use
Software
Business Methods
Genetically Engineered Organisms
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A Better Mousetrap
 U.S. Patent No. 5,706,601 to Dail et al. for
TRAP AND METHOD FOR TRAPPING A
MOUSE OR OTHER RODENT
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A Better Mouse
 U.S. Patent No. 4,736,866 to Leder et al. for
TRANSGENIC NON-HUMAN MAMMALS
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What cannot be Patented?
Principles
Laws of Nature
Mental Processes
Intellectual
Concepts
 Ideas
 Natural Phenomena
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 Mathematical
Formulae
 Fundamental Truths
 Original Causes
 Motives
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Requirements for Patents
It must be:
 Useful
 Novel
 Nonobvious
 Invented by you
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Securing Patent Rights
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Conception
Reduction to Practice
Filing of Application
Issuance of Patent
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Patent Considerations
 Conduct a patent search before filing a
patent application
 File the patent application before
disclosure or commercialization
- One year grace period in North America
- No grace period in many countries
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TRADEMARKS
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What is a Trademark?
Protects an exclusive “sign” that is used
to distinguish products or services
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Examples of Trademarks
Word
Word and Symbol
Stylized Word
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Examples of Trademarks
Symbol
Device
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Examples of Trademarks
Color
Slogan
Sound
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Types of Trademarks
 Federally registered trademarks
 State registered trademarks
 Common law trademarks
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Selecting a Trademark
 Two main considerations:
• A distinctive element
- Cannot cause confusion with existing
marks
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Can “Cake” be a Trademark?
No
 Common commercial
name for the goods
 Does not distinguish
goods from others in
marketplace
Yes
 Identifies goods
 Distinguishes goods
from others in
marketplace
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Trademark Considerations
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Conduct a trademark search early
Marks need a distinctive element
File an application or use the trademark early
Present the mark as a mark
- Set marks apart from regular text
- Follow marks with a trademark symbol (TM, ®)
- Marks are always adjectives, never nouns
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US Patent No: 5,509,859
Leash With Sound
"A novelty item for creating the
illusion of an imaginary pet
including a hollow, elongated
leash with a handle at one end
and a collar and harness
adjacent the other end. Housed
within the handle, which is
hollow, is a battery power
source and an integrated circuit
for producing a plurality of
animal sounds.”
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COPYRIGHTS
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What is a Copyright?
Grants the right for a fixed period of time
to exclude others from:
 copying, distributing, and performing or
displaying publicly an original work of
authorship, and
 preparing derivative works based on the
original work of authorship
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What are “Original Works of
Authorship”?
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Literary works
Pictorial, graphic, and sculptural works
Audiovisual works
Musical works
Dramatic works
Sound recordings
Architectural works
Choreographic works
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Examples of Copyrights
Harry Potter – Book
(Literary Work)
Harry Potter – Movie
(Motion Picture)
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Examples of Copyrights
Harry Potter – Soundtrack
(Sound Recording)
Harry Potter – Movie Poster
(Pictorial Work)
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What are not “Original Works of
Authorship”?
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Ideas
Procedures
Processes
Systems
Titles
Short Phrases
 Methods of
Operations
 Concepts
 Principles
 Discoveries
 Useful Articles
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Types of Copyrights
 Automatic Rights
 Registered Rights
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Copyright Considerations
 Owner must provide notice
 Owner must register to enforce
 Independent contractors own the
copyrights in their work unless you have
an agreement to the contrary
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US Patent No: 7,062,320
Device for the Treatment of Hiccups
"A device for curing hiccups,
comprising: a metallic cup-like
vessel being a first electrode for
producing electricity adapted to
be applied to the lip of the user;
and a second electrode
electrically insulated from said
first electrode being affixed to
said vessel and extending from
a point substantially within said
vessel to a point substantially
above a rim of the vessel.”
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TRADE SECRETS
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What is a Trade Secret?
A right that protects against acquisition or
disclosure by “improper means”
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Theft
Bribery
Misrepresentation
Breach of a duty to maintain secrecy
Espionage
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Examples of Trade Secrets
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Drawings
Cost Data
Customer Lists
Compositions
Patterns
Compilations
Programs
Devices
Techniques
Processes
Methods of
Assembly
 Other Methods
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Trade Secrets – Specific Examples
KFC’s
11 Secret Herbs and Spices
Coca-Cola’s
Secret Soft Drink Formula
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Acquiring Trade Secrets
Information that:
 Derives independent economic value
from being not generally known
 Is the subject of “reasonable” efforts to
maintain its secrecy
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Trade Secrets Considerations
 May last forever but all value may be
lost at any time
 If others patent what you have as a
secret, they could prevent you from
using your “secret”
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US Patent No: 5,996,127
Wearable device for feeding and observing birds and
other flying animals
"A device for feeding and observing flying animals comprising:
a hat, the hat including a front portion and a rear portion;
a first support mounted on the hat and extending forward of the
front portion of the hat; and
a feeder configured
to contain food for
flying animals
mounted on the first
support, wherein the
flying animals can
be observed while
they feed.”
© Kolisch Hartwell 2007
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Peter D. Sabido
Kolisch Hartwell, P.C.
Intellectual Property Law Firm
(503) 224 – 6655
sabido@khpatent.com
© Kolisch Hartwell 2007
All Rights Reserved